The US is unique in that the basis for its patent laws stems from the Constitution, the mandate to “promote the Progress … useful Arts,” in Art. I, §8, cl. 8. The best mode requirement has a connection to the mandate to promote the useful arts. In the interest of harmonization, both the Senate and the House versions of the Patent Reform Act (named the “America Invents” Act) preclude the use the best mode requirement in invalidating a patent. In Wellman Inc. v. Eastman Chemical Co., the CAFC opinion illustrates why, if we’re going to continue the exchange of a monopoly for teaching the public how to practice the art in the most useful manner, failure to disclose the best mode should remain as resulting in invalidity.

Wellman owns two patents related to “slow crystallizing” PET resins used in plastic beverage containers and sued Eastman for infringement. At the time Wellman filed the first application, it had commercialized a slow crystallizing PET resin, which it referred to as Ti818. Waldman did not disclose the recipe for Ti818 in the patent application and the ranges of concentrations of ingredients provided in the patent application either did not include the concentrations used in Ti818, or the preferred concentration was not the concentration used in Ti818.

The Wellman patents also disclosed optional heat-up rate additives (“HUR”) for their PET resin. Spinels are disclosed in the patent application, as the most preferred HUR additives and carbon black is described as a suitable additive. Ti818 includes an HUR additive called N990, a specific type of carbon black with a 290 nm particles size. At trial, based on the testimony of one of the inventors, the District Court found that Wellman sought to maintain the use of N990 as a trade secret. The District Court granted Eastman’s motion for summary judgment of invalidity for failure to disclose the best mode. The CAFC upheld the decision of the District Court.

The circumstances in Wellman illustrate why the best mode requirement should remain as a weapon in the quiver of those pledging invalidity as a defense. The tit-for-tat agreement between the government and the patent applicant, a monopoly in exchange for teaching the public how to practice the invention, should not tolerate keeping the best manner of practicing the invention secret. Allowing the applicant to keep the best part of practicing the invention secret, allows them to have their cake and eat it too – the inventor gets a monopoly and keeps the best way of practicing the invention secret.

A case like Wellman presents serious questions as to whether precluding the use of the best mode requirement in invalidating a patent is in keeping with the constitutional mandate to “promote… useful arts.” Allowing the inventor to have their cake and eat it too could make Thomas Jefferson shake in his grave.